Creating a Protectable and Marketable Trademark

One of the first issues to consider when forming a company is choosing a trademark that is both marketable and protectable. To achieve both goals, you must consider and balance the competing concerns of marketing ease with having a unique trademark. Utilizing the naming strategies presented below, you can create a brand name that simultaneously suggests your company's product or characteristics while receiving the many advantages granted by a trademark registration.

I. Trademark Considerations When Selecting a Brand Name

Not all brand names are eligible for trademark protection. United States trademark law recognizes a "spectrum of distinctiveness," a sliding scale of protectability, where the more distinct and unique the term, the easier it is for the owner to claim and be granted exclusive trademark rights for that term. The diagram below illustrates the "spectrum of distinctiveness" for the 4 categories of trademarks.

Fanciful trademarks are generally "coined" terms that had no meaning before their use as a trademark. Famous examples of fanciful trademarks include KODAK, STARBUCKS, VERIZON, EXXON, and CINGULAR. Fanciful words are inherently distinctive and immediately function as a trademark or service mark. They are afforded the greatest amount of trademark protection.

Arbitrary marks are common English words which are used in a way such that their normal meaning bears no relationship to the goods or services to which they are applied. NICKELODION is an example of an arbitrary mark, for its definition as "an early movie theater charging an admission price of a nickel" has no direct relation to a cable television channel for children. The trademark APPLE for computer products is another example of an arbitrary mark. Obviously, whether a mark is arbitrary or not depends upon its context. Whereas APPLE as applied to computers is arbitrary, if applied to a fruit grower that mark would be descriptive. Arbitrary marks are generally easy to register because there is no connection between the mark and the goods or services, but they may present a marketing challenge.

Although not as inherently distinctive as fanciful or arbitrary trademarks, suggestive trademarks are also deserving of trademark protection. Suggestive trademarks allude to some quality or characteristic of the product or service, however, the consumer must exercise some degree of imagination to determine the exact nature of the product or service. Examples of suggestive marks include GREYHOUD for bus services and JAGUAR for automobiles, with both marks suggesting the speed of their products, both of which are used for transportation. Other examples include PLAYBOY for a men's magazine focusing upon women, 7-ELEVEN for a convenience store that was originally open from 7:00 a.m. to 11:00 p.m.

While the categories of distinctive marks, fanciful, arbitrary, and suggestive have the benefit of receiving trademark protection, these trademarks often require a large amount of marketing dollars and effort to convey the qualities of the company, product or services to consumers. Because marketing concerns will often outweigh trademark concerns, many companies use descriptive trademarks.

Descriptive trademarks are often the easiest to market because they describe the goods or services they are marketed with. Examples of descriptive trademarks would be COMPUTERLAND for a computer store, OATNUT for bread containing oats and nuts, VISION CENTER for a business offering optical goods and services. My law firm's website, which offers advice and services relating to registering a trademark, has the descriptive trademark of REGISTERING A TRADEMARK. Companies may choose a descriptive trademark even though it is a weak mark because there are marketing benefits to using a mark that describes the product. The Trademark Office generally feels that a descriptive trademark is not initially entitled to registration because it describes all other competing products too.

Descriptive marks may become registerable upon a showing that consumers identify that descriptive term with only one company. For example, the descriptive term FROSTED MINI WHEATS was granted registration after Kellogg showed its extensive use and advertising of this mark and had thus established "secondary meaning." "Secondary meaning" occurs when customers come to recognize the particular term as having a second meaning, signifying a particular brand.

While descriptive trademarks have an initial marketing ease, there are many disadvantages to using them. These include increased costs of trying to register descriptive trademarks, which are routinely rejected by trademark offices worldwide. In the event that the owner of a descriptive trademark is not able to develop secondary meaning in the trademark, the mark is not protectable and consequently the owner will not be able to prevent others, even competitors, from using the same or similar terms.

Generic trademarks occur when a trademark used to identify a single product is also used to identify a whole class of similar products. Examples would include the term "Milk" to identify milk or "Banana" to identify a banana. Generic trademarks are not granted any trademark rights and are not protectable.

Trademarks that become so well known that they become used by society to describe that term become generic and lose their trademark rights in a process called "genericide." Prime examples of former trademarks that became the generic name for a whole class of products include ASPIRIN, THERMOS, TRAMPOLINE, ESCALATOR, and CELLOPHANE.

Because of the many advantages for achieving trademark rights and registration for fanciful, arbitrary and suggestive trademarks, the following naming strategies are designed to help you create a distinct, protectable brand that also conveys the attributes of your company, product or service.

II. Brainstorming Strategies for Creating Suggestive Marks

Suggestive trademarks often strike the perfect balance, protectable as trademarks while still suggesting characteristics of the company or product. Here are some strategies to assist you in creating strong and unique brands. You can add a descriptive term at the end of the suggestive term to clarify what you are offering.

A. Choose a related term from another culture, mythology, field of study, animal or plant.

As a lover of Greek mythology, I will use terms from either Greek myth or from their pantheon of gods to find a term that positively connotes the characteristics of the company. The most famous example of this is NIKE, which is the Ancient Greek word for "victory," effectively used by a sports and shoe manufacturer. Examples I created include:

MERCURY SOFTWARE - for software that speeds communication.

PHOENIX VENTURES - for an investing firm that focuses upon investing in failing companies and reviving these companies.

POISDEON ADVENTURE - for a water slide and ride theme park.

ARETE COACHING - for life counselors ("arete" is the Greek word for "overall excellence").

DIONYSIUS - for a dance club with a wine bar.

In addition to mythology, there are several other areas to pick your corporate name from. The fields of art, music, history, sciences, finance and sports all have innumerable possibilities. Choosing from a field related to your company or product makes for easier marketing. For example, in the sporting goods industry, HAIL MARY would be a memorable brand for a football and HAT TRICK a good brand for hockey gear. Another example would be to draw from artistic periods, such as SURREALISM DESIGN or DADA DESIGN for an interior designer.

Other possibilities include using an animal or tree that possesses similar characteristics as those you want to convey with your brand. Car manufacturers have successfully used JAGUAR and MUSTANG to convey the speed of their vehicles. Think of the attributes you want to convey and write out a list of representative animals or trees. Here are some traits and animals/trees that are identified with those traits.

Wisdom: owls, dolphins

Agility: cats, horses

Stability: oak, whale

Majestic: redwood, bald eagle, whale

Loyal: dog

B. Use a term that is not descriptive but connotes many of the ideas or principles of your company or product.

This term should not explicitly describe your company, product or services, yet the meaning of this term should be consistent with your company's image and goals. A great example of this is LEAPFROG, the educational toy manufacturer. LEAPFROG simultaneously conveys two related messages: 1) that LEAPFROG, which is a famous children's game, is entertaining and geared for children; and 2) that utilizing LEAPFROG products will allow your child to "leap ahead" in learning.Focus upon terms that have positive connotations as well as describe your company and products.

C. Truncate or use an acronym rather than a descriptive term.

Truncating descriptive terms may allow the mark to still convey the essential features of the product while also being protectable. As an example, the trademark ALLEVE suggests that this cold medicine will alleviate sickness and congestion. Other examples include PRIVATEL for a telephone company offering private connections and NETSCAPE for a search engine that helps you explore the Internet landscape.

Acronyms are another means of collapsing a descriptive term into a protectable term. For example, while the term INTERNATIONAL BUSINESS MACHINES describes a company that produces machines for an international market is descriptive, the IBM initials are not descriptive.

D. Utilize a foreign term that suggests the qualities of your company

For example, the French term "Bon Voyage" would be a memorable and suggestive name for a travel agency. Similarly, "Bon Mot" (meaning "Good Word") would be a suggestive trademark for a speech writing or editorial company.

One caveat, the Trademark Office views foreign terms as their literal translations. So using the French term "Velo," which means bicycle, for the brand of a bicycle would not be granted a trademark registration. Focus upon foreign terms that suggest but do not describe your company, product or services.

E. Invent a brand name

While inventing your brand name generally creates a very unique and protectable trademark, there are often large marketing costs to educating consumers about your name. Adding a descriptive term describing your product can lessen any confusion.

A quick and personal way to invent a brand name is to base it upon a combination of the owners' names. For example, a small company with joint owners named Wayne and Coral might name their company WAYCOR CONSULTING or CORWAY COACHING.

III. The Next Step - Trademark Clearance

Choosing a suggestive, arbitrary or fanciful trademark increases the likelihood that the term will be eligible for trademark protection. A trademark attorney can order and review a trademark search to determine your likelihood of success. Ideally, have several potential trademarks to choose from, almost ensuring that one will become a registered trademark.

Although choosing a trademark that satisfies both marketing and legal concerns requires a lot of time and energy, you will be rewarded with a strong brand that your company can use exclusively and forever.